Sierra Leone: 2014 trade mark legislation being applied despite absence of regulations
There has for some time been a degree of confusion about trade mark law in Sierra Leone. In 2014 a new Trade Marks Act came into force, replacing the old Trade Marks Act, Cap 244.
The new legislation significantly modernised trade mark law. One of the changes brought about was that the classification system that was in place – the old British system comprising 50 classes of goods and no services – was replaced with the Nice classification system. Another was that the renewal term was dropped from 14 years to the standard 10 years.
But no implementing regulations were ever promulgated which technically means that the new law is not in force. But it is certainly being applied. Some time back the Registrar issued an oral instruction to Registry staff to apply the new Act with effect from 15 January 2018.
As a consequence, the Nice classification is being applied and certificates of registration now reflect a 10-year term rather than a 14-year term.
Whilst the correctness of this is debatable, the situation now is as follows:
- The 10–year renewal term will automatically apply to all new trade mark applications filed after 15 January 2018.
- The initial renewal term for trade mark applications that were already on file and still pending as of 15 January 2018 is 14 years.
- The term for all renewal applications filed after 15 January 2018 is 10 years, irrespective of the due date of the trade mark.
- Where the due date was prior to 15 January 2018, and the renewal application was filed before that date, then the old law 14-year renewal term will still apply.
- Where the due date was prior to 15 January 2018, and the renewal application was filed after that date, then the new law 10-year renewal term will apply.
- Where the renewal due date was after 15 January 2018, and the renewal application was filed before that date, the new law 10-year renewal term will apply.
As a final point we should mention that there are certain UK-based registrations that were filed under Section 57 of the old Act and that these will continue to be recognised under the new Act. These will be treated as independent registrations and no longer ‘tied’ to the base UK registration, although their existing 10-year renewal anniversary dates will, of course, still correspond to those of the UK registrations.
It is, of course, conceivable that there may one day be a legal challenge, but in our view trade mark owners should work on the assumption that the 2014 legislation is in force and that, accordingly, services can be covered and registration and renewal terms are now 10 years.
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